AT&T Wrestling with How to Handle IP Rights from Walk-On Developers
SAN FRANCISCO -- AT&T is grappling with how to handle intellectual property rights to technologies that emerge from Innovation Centers it’s setting up, a patent lawyer for the carrier said Friday. “There’s a lot of legal complexity” in sorting out who will own the rights to broadband device, applications and network-equipment innovations that outside developers bring to AT&T and vendors at the centers, Susan McGahan said at the American Bar Association annual meeting. She said the company plans to work closely at the centers, which are “in the infancy stage,” with suppliers such as Alcatel-Lucent and Ericsson.
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The carrier plans to first seek a waiver of rights from a developer, McGahan said. If there’s “pushback,” AT&T will propose that it be allowed to make use of anything but legally protected ideas from information provided, she said. An “anti-NDA,” a variation on a nondisclosure agreement, could be used to obligate the carrier to keep information confidential for a year but allow it to take advantage of the ideas after that, McGahan said. “It is likely that joint ownership is going to be the way to go” unless an innovator is “someone off the street,” she said. “There’s a talent pool” of “hackers” that “we're going to have to tap into,” McGahan said. These technologists don’t have much formal education but are amazingly talented in computer technology, she said.
AT&T also is getting tougher with vendors when it comes to applying its expertise to suggestions for developing their products, McGahan said. “We are no longer the free R&D” in matters such as suggesting to Cisco ways to scale its routers, she said. McGahan and David Marcus, Comcast’s chief patent counsel, were asked on a panel how they decide whether to settle or fight claims. As a defendant, “you don’t want to be irrational” in spending more to defend a claim than it would cost to settle, “but that’s not looking at the whole picture,” Marcus said. Comcast lets claimants know that “we're not just going to settle these cases,” he said. It becomes a different story when the company’s hard line “shifts the dollar values so low” that not settling would be irrational, Marcus said. Claimants have lost leverage since the threat of an injunction has weakened, he said.
Comcast’s patent work is very one-sided, Marcus said. “We defend a lot of cases. We've never filed a patent claim against anyone.” AT&T’s posture toward a claim against it depends mainly on “how core it is to the network,” McGahan said. “Yes, money is important,” but secondary, she said. “We will fight. We will spend the money to do that,” as when the carrier unsuccessfully took a dispute with Microsoft all the way to the Supreme Court.
Many claims come from what are called trolls or nonpracticing entities -- companies whose only business is owning and enforcing patents -- and in most cases, they “are willing to settle because they're going after so many people,” McGahan said. When operating technology companies make claims against AT&T, the value of a licensing deal in a settlement is sweetened by the marketing lure of getting to identify the carrier as a customer, she said. When AT&T is sued for patent infringement, the company must be careful not to disclose proprietary information unnecessarily, McGahan said. “It’s the Verizons of the world that are sued with us.”